Wednesday, March 21, 2012

Precedential No. 13: TTAB Sustains L'Oreal's Opposition to L'OREAL PARIS for Aloe Vera Drinks, Finding Likely Confusion and Lack of Bona Fide Intent

The fame of the marks L'OREAL and L'OREAL PARIS for cosmetics and personal care products was a major factor in the Board's sustaining Opposer's Section 2(d) claim in this opposition to registration of L'OREAL PARIS for "aloe vera drinks." As to L'Oreal's claim that Applicant Robert Victor Marcon lacked a bona fide intent to use the applied-for mark, Applicant's pattern of filing ITU applications for disparate goods under the well-known or famous marks of others was one basis for the Board's sustaining that claim. L’Oreal S.A. and L’Oreal USA, Inc. v. Robert Victor Marcon, 102 USPQ2d 1434 (TTAB 2012) [precedential].

Likelihood of Confusion: The Board began by finding Opposer's marks L'OREAL and L'OREAL PARIS to be famous for cosmetics and personal care products, based on billions of dollars in sales, significant market share, huge advertising expenditures, extensive media exposure, impressive brand awareness, and consistent ranking by Business Week as one of the world's "100 Top Brands."

Applicant Marcon made the "incredible statement" that the fame factor "strongly supports" his case because Opposer's fame is primarily associated with cosmetic products. The Board pointed out that a finding of fame for the senior mark can never support a junior party. Fame expands the scope of protection accorded a mark. And, the Board observed, "[a] strong mark ... casts a long shadow which competitors must avoid."

As to the marks, Opposer's L'OREAL PARIS mark is obviously identical to Applicant's mark. Moreover, the Board not surprisingly found Opposer's marks L'OREAL to be substantially similar to Applicant's mark, since, given the geographically descriptive nature of PARIS, consumers are more likely to remember the L'OREAL portion of Applicant's mark.

Turning to the goods, the Board noted once again that when the marks at issue are identical a lesser degree of relatedness between the goods is necessary to support a finding of likely confusion. At first glance, cosmetics and beverages "might not appear to be inherently related," but Opposer submitted "substantial evidence to show several reasons for finding such goods to be related."

Third-party registrations and Internet search results revealed companies that sell both cosmetics and food/beverage products. [E.g., MOUNTAIN DEW for lip balm and soft drinks]. Opposer also provided an article discussing the trend of "traditional skin care lines improving looks with dietary supplements." [Isn't that hearsay? - ed.]. Opposer's vice president testified that L'Oreal is an "innovator" from whom customers expect new and different products. [A bit self-serving, don't you think? - ed.]. Moreover, aloe vera is an ingredient in cosmetics and personal care products. Opposer's witness self-servingly testified that "consumers are aware that aloe or aloe vera is often prominently listed as a beneficial ingredient in moisturizers and other skin care products."

As shown by the record, companies have marketed cosmetics and beverages under the same mark; further, aloe vera is commonly used as an ingredient in cosmetic and personal care products. The evidence also shows the growing relationship between “inner health” products (e.g., beverages and nutritional supplements) and “outer beauty” products (e.g., cosmetics and personal care products). Accordingly, we find that the parties’ goods are sufficiently related for purposes of our likelihood of confusion analysis, and this factor weighs in favor of opposer.

As to trade channels, cosmetics and beverages move through supermarkets, drug stores, and mass merchandisers. [So do most every other product under the sun. - ed.] The classes of customers are the same: ordinary consumers. The identified goods are not restricted as to price, and presumably include inexpensive items that may be subject to impulse purchases.

Finally, under the 13th du Pont factor, the Board considered Applicant Marcon's bad faith. It agreed with Opposer that "applicant has a history and pattern of filing intent-to-use applications for a disparate range of products for which he has no industry-relevant experience, and where the applied-for marks are identical to some of the best known, previously registered trademarks in the country" Marcon has sought to register HEINEKEN for meat juices, JACK DANIELS for cigars, CHANEL for greeting cards, SOUTHERN COMFORT for beer, BAYER for mouthwash, etc. [How about TTABLOG for cat litter?].

This pattern convinced the Board that Marcon's adoption of L'OREAL PARIS was in bad faith. "Such bad faith is strong evidence that confusion is likely, as such an inference is drawn from the imitator’s expectation of confusion." But the Board hastened to add that even without this bad faith finding, it would still find confusion likely. And it did.

Lack of Bona Fide Intent: Marcon had no documents evidencing a bona fide intent to use the applied-for mark for aloe vera drinks. He admitted having no industry experience, no business plan, no potential partners or investors, no logos or packaging, and no concrete activities toward using the mark. His vague assertions regarding licensing and outsourcing were "woefully deficient" to establish a bona fide intent. The Board therefore concluded that Marcon lacked the requisite bona fide intent when he filed his Section 1(b) application.

Marcon's "demonstrated pattern" of filing applications (sixteen in all) for the famous or well-known marks of others was another basis for finding lack of bona fide intent. The legislative history of the Trademark Law Revision Act of 1988 provides several examples of objective circumstances that "may cast doubt on the bona fide nature of the intent or even disprove it entirely." One of these circumstances is the filing of an excessive number of intent-to-use applications to register marks that were ultimately not used.

Of course, Marcon's self-serving statements that he acted in good faith and did not lack a bona fide intent established nothing. The evidence establishing a bona fide intent, or a lack thereof, must be objective. Here the complete lack of documentation or other objective evidence of Marcon taking active steps toward use "outweighs any subjective (or even sworn) intent to use the mark." And Marcon's "blatant attempt to obtain registrations of third parties' well-known marks, and subsequent abandonment of those applications provides significant, additional support" for the Board's conclusion.

Finally, the Board declined to reach Opposer's dilution claim.

TTABlog comment: I am reminded of the Kaplan v. Brady case (TTABlogged here), wherein the Board denied a motion for summary judgment of lack of bona fide intent, but looked dimly upon that applicant's filing of an excessive number of ITU applications that were later abandoned.

Text Copyright John L. Welch 2012.


At 9:58 AM, Anonymous Anonymous said...

Not sure why a case like this deserves a lot of effort or explanation. If someone adopts such a well known trademark or company name for their own product, seems to me that you have bad faith in the DuPont factors but lack of bona fide intent automatically. I can't have a good faith intent to sell Coca Cola aluminum siding. Some things don't really need a long winded legal justification.


Post a Comment

<< Home